DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This office action is in response to the Amendment filed on 04/27/2026.
Claims 1-14 and 17-21 are presently pending; claims 15-16 are canceled; claims 1-10 and 18-20 are withdrawn; claims 11-12 are amended; claim 21 is new; claims 11-14, 17 and 21 are under examination.
The objection to claim 12 is withdrawn in light of the amendments to the claims.
The rejections of claim 16 under 35 U.S.C 112(b) and 112(d) are moot as this claim has been canceled.
The 35 U.S.C. 102 rejection of claims 11 and 17 over ALDOUS is withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejections of claims 12 and 14 over ALDOUS and claim 13 over ALDOUS in view of SIROTA are maintained; the rejections of claims 15-16 are moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Interpretation
For purposes of claim interpretation, “heavy distillate” as recited in claims 11-14 (see claim 11 at lines 4 and 8, claim 12 at lines 1 and 3, claim 13 at lines 3-4 and claim 14 at lines 3 and 5) is interpreted as meaning distillate in the atmospheric boiling point range of between about 350 °C and about 550 °C, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraph [0105].
For purposes of claim interpretation, “asphaltene-rich residue” as recited in claims 11, 13-14 and 17 (see claim 11 at lines 7 and 9, claim 13 at line 4, claim 14 at line 6 and claim 17 at lines 1-2) is interpreted as meaning the heavier phase, which contains asphaltenes, i.e., the deasphalting residue, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraphs [0058] and [0095].
For purposes of claim interpretation, “extra heavy oil” as recited in claim 15 (see claim 15 at lines 2) is interpreted as meaning crude oil, including bitumen, having a room temperature viscosity greater than 10,000 centipoise and an API gravity of 10 deg API or lower, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraph [0048].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 11-12, 14, 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Aldous, et al. (U.S. Pub. No. 2019/0016965-A1) (hereinafter, “ALDOUS”).
Regarding claim 11, ALDOUS teaches a method for producing an asphalt binder (see ALDOUS generally at Abstract and paragraph [0009]), comprising:
providing a petroleum feedstock (see ALDOUS at paragraphs [0003] and [0044]), the petroleum feedstock comprising extra heavy oil, bitumen, or recycled asphalt (see ALDOUS at [0003], [0042] and [0044], teaching crude oil feedstock (such as heavy oil feed), which comprises bitumen);
subjecting the petroleum feedstock to vacuum distillation or flash separation to produce a heavy distillate and a residue (see ALDOUS at Abstract and paragraphs [0008], [0026] and [0042], teaching vacuum distillation which produces a heavy vacuum gas oil (i.e., distillate) and vacuum resid (i.e., residue)),
dividing the residue into a first portion and a second portion (see ALDOUS at paragraphs [0008] and [0083], teaching subjecting at least a portion of the vacuum resid to solvent deasphalting and including at least a portion of the vacuum resid in the product, i.e., the residue is divided into at least a first and second portion);
performing solvent deasphalting on the first portion of the residue to produce a partially deasphalted oil and an asphaltene-rich residue (see ALDOUS at paragraph [0008]); and
blending the second portion of the residue with the heavy distillate and i) the partially deasphalted oil or; ii) the asphaltene-rich residue, to produce the asphalt binder (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083], teaching making asphalt binders comprising a mixture of vacuum resid, heavy vacuum gas oil, the deasphalter residue/resin, and optionally deasphalted oil).
ALDOUS does not explicitly mention that the residue has an asphaltene content of at least 20% by weight; however, ALDOUS teaches a method which is identical or substantially identical to the claimed method, comprising subjecting a petroleum feedstock comprising bitumen, such as heavy oil, to vacuum distillation, therefore the residue produced by vacuum distillation would be expected to have the same or overlapping properties as the claimed residue, including asphaltene content. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of ALDOUS have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Regarding claim 12, ALDOUS teaches a method according to claim 11, wherein the heavy distillate has an atmospheric equivalent boiling temperature overlapping with and thereby rendering obvious the claimed range of between about 350 °C and about 550 °C and the residue has an atmospheric equivalent boiling temperature greater than the heavy distillate (the distillation residue by definition has to have a boiling point that is greater than the distillate, as that is the reason that it is residue; see ALDOUS at paragraphs [0026]-[0028] and [0032], teaching gas oil (i.e., distillate) distillation points, e.g., a T5 to T95 distillation point of 370 to 482 °C or 399 to 538 °C, and also teaching 510 °C+, 538 °C+ or 566 °C+ vacuum resid fractions (i.e., vacuum residue having an atmospheric boiling temperature of 510 °C or greater, 538 °C or greater, or 566 °C or greater), i.e., the distillate boiling temperature would have to be lower than any given vacuum resid boiling temperature, e.g., less than 538 °C, etc.). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 14, ALDOUS teaches a method according to claim 11, wherein the residue is divided into multiple portions (see ALDOUS at e.g. paragraphs [0008] and [0083], teaching dividing the vacuum resid into a plurality of portions), and wherein the blending step comprises:
blending a portion of the residue with a portion of the heavy distillate and the partially deasphalted oil to produce a first asphalt binder (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083], teaching asphalt binder products comprising at least a portion of the vacuum resid (i.e., the residue), at least a portion of the vacuum gas oil (i.e., the heavy distillate) and the deasphalted oil);
and blending a portion of the residue with a portion of the heavy distillate and the asphaltene-rich residue to produce a second asphalt binder (see ALDOUS at paragraphs [0008], [0018], [0080] and [0083], teaching asphalt binder products comprising at least a portion of the vacuum resid (i.e., the residue), at least a portion of the vacuum gas oil (i.e., the heavy distillate) and deasphalter residue/resin (i.e., the asphaltene-rich residue)).
ALDOUS does not explicitly mention into how many portions the residue and the heavy distillate are divided; however, ALDOUS explicitly teaches that a binder may be formed by mixing a portion of the residue, a portion of the heavy distillate, and the partially deasphalted oil (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083]), and explicitly teaches that a different binder composition may be formed by mixing a portion of the residue, a portion of the heavy distillate, and the asphaltene-rich residue (see ALDOUS at paragraphs [0008], [0018], [0080] and [0083]). It is therefore obvious to one of ordinary skill in the art that the residue may be divided into three portions and the heavy distillate may be divided into two portions in order to make the two binders, as ALDOUS explicitly teaches making both of these asphalt binders.
Regarding claim 17, ALDOUS teaches a method according to claim 11, further comprising collecting a fraction of the asphaltene-rich residue (see ALDOUS at e.g. paragraph [0008], teaching collecting deasphalter residue). The limitation of “for use in carbon fiber production” is merely a recitation of an intended use of the residue which is collected, and is not directed toward the claimed method. The way in which someone intends to use the residue after it is collected is not relevant to the claimed method for producing an asphalt binder and does not hold patentable weight in the claim.
Regarding claim 21, ALDOUS teaches a method according to claim 11, further comprising adjusting a performance grade of the asphalt binder by adjusting at least one of: a cut point temperature of the vacuum distillation or flash separation step; a solvent to residue ratio during the solvent deasphalting step; and the amount of partially deasphalted oil or asphaltene-rich residue blended with the residue and heavy distillate (see ALDOUS at paragraphs [0018], [0041]-[0042], teaching adjusting the component contents to adjust asphalt grade).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over ALDOUS in view of Sirota (U.S. Pub. No. 2015/0191598-A1) (hereinafter, “SIROTA”).
Regarding claim 13, ALDOUS teaches a method according to claim 11, further comprising selecting a composition of the asphalt binder to achieve a desired grade using an empirical model that predicts a temperature grade (see ALDOUS at paragraphs [0041]-[0042] and [0044]-[0052] and Tables 1-3) based on:
measuring viscosity of a blend comprising the heavy distillate and at least one of the partially deasphalted oil and the asphaltene-rich residue (see ALDOUS at Table 3);
correlating the viscosity with a temperature grade for a given blend (see ALDOUS at Table 3, correlating viscosity with desired penetration grade at 25 °C);
and correlating the temperature grade with another temperature grade (see ALDOUS at Table 3, correlating the penetration grade with softening temperature).
As set forth above, ALDOUS teaches selecting an asphalt binder composition to achieve a desired penetration grade by using an empirical model to predict asphalt binder properties and correlating viscosity of the of a given blend with the penetration grade and softening temperature (which are metrics related to performance grade high and low temperature grades). However, ALDOUS does not explicitly teach predicting high temperature grade and low temperature grade, measuring viscosities of the individual components of the residue, heavy distillate and partially deasphalted oil and/or asphaltene-rich residue, and correlating the viscosities with high and low temperature grade.
However, the claimed method for selecting an asphalt binder composition is known in the art. For example, SIROTA teaches a method for producing an asphalt binder comprising selecting the composition of the asphalt binder to achieve a desired grade using a predictive model by measuring the viscosities of two or more of the plurality of asphalt components, correlating the measured viscosities with a characteristic temperature value, selecting a target characteristic temperature value range and viscosity value range, corresponding to a high temperature performance grade and a low temperature performance grade, for the asphalt blend, and forming the asphalt blend from the plurality of asphalt components based on the target characteristic temperature value range and viscosity value range corresponding to the desired high temperature grade and low temperature grade (see SIROTA at paragraphs [0008] and [0048]). SIROTA teaches that using this versatile predictive model to form asphalt blends having the desired performance grade can provide many advantages, such as allowing for the formation of asphalt blends having desired features using components that would traditionally be viewed as less desirable, providing real-time feedback for an asphalt formation process, enhancing throughput, and decreasing costs (see SIROTA at paragraphs [0005]-[0006], [0037]-[0038] and [0048]-[0049]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of ALDOUS by using the predictive model taught by SIROTA (which includes measuring viscosities of two or more of the individual components, e.g., the residue, heavy distillate, partially deasphalted oil and/or asphaltene-rich residue used in the asphalt blends of ALDUOUS, and correlating the measured viscosities to a high temperature grade which is correlated to a low temperature grade) to form asphalt compositions having the desired temperature grade. One of ordinary skill in the art would have been motivated to make this modification for the benefit of achieving the desired performance grade for the asphalt binder while allowing for the use of components that would traditionally be viewed as less desirable, receiving real-time feedback for the asphalt formation process, enhancing throughput and decreasing costs (see SIROTA at paragraphs [0005]-[0006], [0037]-[0038] and [0048]-[0049]).
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 11, 17 and 21 over ALDOUS as set forth above.
Applicant argues:
“Aldous also teaches production of “resin” which is either the deasphalter residue of a second deasphalting step or the product of a resin settler, which separate resins from the deasphalted oil… However, the method of claim 11 only includes a single deasphalting step (and does not include use of a resin settler). Thus, claim 11 does not recite any substance equivalent to “resin”… Aldous… teaches that a product slate can be formed… However, this product slate does not include the vacuum resid… Aldous teaches… vacuum resid and/or rock can also be combined with the heavy resin for formation of the commercial grade asphalt… However, all of these combinations are based on heavy resin, and, as noted above, there is no equivalent to “resin” in claim 11” (see Remarks at pg. 8-9).
“Aldous teaches… that vacuum resid and deasphalted oil can be combined, but does not describe a blend of vacuum resid, deasphalted oil, and heavy vacuum gas oil. Moreover, there is no indication of what this product would be used for and if it would be suitable as an asphalt binder… Aldous teaches… that vacuum resid and the first deasphalter residue can be combined… none of the asphalt binders compositions in Table 3 utilize the vacuum resid” (see Remarks at pg. 9 and 12).
“Aldous is silent on processing of extra heavy oil, bitumen, or recycled asphalt… a person skilled in the art would understand that “heavy oil” is distinct from “extra heavy oil”… the present application provides methods for producing asphalt binders using high-asphaltene content residue, whereas Aldous utilizes low-asphaltene content resins and other fractions” (see Remarks at pg. 11-12).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is novel and nonobvious because the claimed method only includes a single deasphalting step and does not recite a “resin” while ALDOUS discloses a second deasphalting step which produces a “resin”, the Examiner respectfully disagrees. Claim 11 uses the open language “comprising”, and does not in any way exclude additional, unrecited process steps or the inclusion of a “resin”. As set forth in the rejection above, ALDOUS discloses or renders obvious all of the claimed limitations of the method.
In response to Applicant’s argument that ALDOUS does not disclose a combination of vacuum resid, deasphalted oil, and heavy vacuum gas oil and provides no indication that the product would be suitable as an asphalt binder, the Examiner respectfully disagrees. The entire disclosure of ALDOUS makes clear that the disclosed compositions are used as asphalt; Applicant’s Remarks also explicitly acknowledge that “Aldous teaches production of asphalt binders”. As set forth in the rejection above, ALDOUS explicitly teaches that the vacuum resid, deasphalted oil, and heavy vacuum gas oil may be combined (see ALDOUS at paragraphs [0008], [0018], [0048], [0080] and [0083], teaching making asphalt binders comprising a mixture of vacuum resid, heavy vacuum gas oil, the deasphalter residue/resin, and optionally deasphalted oil). In response to Applicant’s argument that ALDOUS does not disclose this combination because it includes examples which do not include the vacuum resid (specifically in Table 3), the Examiner respectfully disagrees. As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to Applicant’s argument that ALDOUS is silent on processing extra heavy oil, bitumen or recycled asphalt, the Examiner respectfully disagrees. The claimed limitation recited in claim 11 is “the petroleum feedstock comprising extra heavy oil, bitumen, or recycled asphalt”; heavy oil comprises bitumen. Additionally, Applicant’s Remarks and the present specification explicitly distinguish “heavy oil” and “extra heavy oil” as two different materials, and Applicant’s specification at paragraphs [0060]-[0062] and Table 6 explicitly discloses a process wherein using “heavy oil (HO)” (not “extra heavy oil”) as feedstock for vacuum distillation results in vacuum bottoms having an asphaltene content of 36.1 wt.%, which is well above the minimum limitation in amended claim 11 of “at least 20% by weight”. It is clear from Applicant’s disclosure that residue having the claimed asphaltene content can be achieved by vacuum distillation of heavy oil, as disclosed by ALDOUS. Additionally, even without this example, as described in the rejection above, ALDOUS teaches a method which is identical or substantially identical to the claimed method, comprising subjecting a petroleum feedstock comprising bitumen, such as heavy oil, to vacuum distillation, therefore the residue produced by vacuum distillation would be expected to have the same or overlapping properties as the claimed residue, including asphaltene content. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of ALDOUS have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Consequently, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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